Patents As Weapons: How 1-800-CONTACTS Is Using The Patent System To Kill An Innovative Startup

from the shameful dept

We've talked many times about how patents are often used as weapons to kill innovative startups that threaten legacy players. Ryan alerts us to a perfect example of this in practice. 1-800-CONTACTS, the giant online contact lens/glasses space, is trying to kill off an upstart innovative competitor called Ditto. And, no, this is not a case of Ditto copying something that 1-800-CONTACTS invented. The details are astounding. First of all, Ditto's main innovation is doing something that 1-800-CONTACTS does not do (though it has since announced plans to introduce something similar), which is to let buyers of glasses take a quick webcam video of their face, and then be able to see what they would look like in various pairs of glasses. That's pretty cool. The 15 person startup got some funding for this... and then promptly got sued by the bigger company. And 1-800-CONTACTS' actions in this case show that it set out, deliberately, to kill off this innovative startup:

It appears that 1-800-CONTACTS' CEO went onto Ditto's website the very day it launched, presumably to investigate the upstart competitor's new technology. Having seen Ditto's product, 1-800-CONTACTS then went out and purchased a patent from a defunct company that claims to cover selling eyeglasses over a network using a 3D model of a user's face.

But here's the thing: 1-800-CONTACTS does not appear at all interested in licensing the patent to Ditto. Rather, it seems determined to put Ditto out of business. Period. So it's suing Ditto in federal court in Utah, hundreds of miles from Ditto's headquarters in California.

Yes, you read that right. First, the CEO went and saw the site, then sought out and bought a patent that could be used against the company (in this case, US Patent 7,016,824), then brought suit in a very inconvenient jurisdiction and, finally, isn't even entertaining the idea of licensing the patent. And, of course, the patent itself seems highly dubious in quality. Ditto thinks it would win the lawsuit, but spending what little money it has on litigation will almost certainly kill the company anyway. Even if it wins, it will likely lose by using up its money not on innovating, not on delivering a great service to people who want it, but on fighting a bully.

The EFF is asking for help in finding prior art for this patent, via StackExchange's prior art section, in the hopes that the patent can be invalidated quickly. In the meantime, though, shame on 1-800-CONTACTS for being an anti-innovation legal bully. Of course, this isn't the first time we've written about 1-800-CONTACTS doing dubious things against competitors. In the past, it's sued competitors for keyword ads, despite having lost similar cases and despite buying keywords on competitors itself. It seems that the company is willing to use the legal system to crack down on competition whenever it can, which makes it seem like a company worth avoiding when looking for any kind of corrective lens solutions.

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No doubt they use the video to create a rough 3d model of the user's head. That way they can track yaw (shake your head no), pitch (nod yes) and roll (tilt your head to one shoulder) of the user's head so the glasses can move along correctly. The model can also be used to determine what parts of the glasses should be obscured by the head. That way you don't see the far side temple of the glass in front of the face.

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It doesn't really matter if it relates or not, so long as it can be used to start legal action. Ditto could try to fight this, win every case that gets to court, and go bankrupt like Veoh in the process, or thay can give up before they waste their money. If they are very lucky, the EFF effort will invalidate the patent before the serious court action and expense start.

The EFF post is the third link in the google search results for 1-800-CONTACTS. Pretty sure they'll sit on it for a while and let it turn into a massive PR disaster, then unwillingly withdraw the case while blaming EFF.

It doesn't have a nice ring but we could say they got Veoh'd. And despite all trolling opposing it it's incredibly common for intellectual property (as they call these things) to be used to a- censor speech, b- stop fair competition and c- hampering innovation.

I'd be very interested in a study about how much economic damage this is causing already.

this company needs to be shot down by both the public and the courts. the real culpret, however, yet again, is Congress for not making laws that clearly state what can and cannot be patented and how those patents can be used. it's the same with copyright. rather than make specific rules that can be used or not used in various circumstances, Congress left it open ended so that those that are paying into senators funds (read pockets) can basically use things how, when, where they want whilst preventing reverse measures. greed over sense as usual! the troubling thing being that the USA, like everywhere else needs as many new businesses as possible to help get it out of the financial crap hole their own baking industry put it in. allowing moves like this is doing the exact opposite. what a shame this 'upstart' doesn't 'up stakes' and set up in another country. that would be the best option and perhaps bring home the stupidity that has been shown by Congress for so long!

Perhaps it should not be overlooked that the patent has been available for review by the public (e.g., Ditto) since early 2006.

Likewise, perhaps this new company would benefit from adjusting its current "product" such that infringement is avoided.

Of course, it does not serve the goal of the EFF to raise a hue and cry every time a company has the audacity to assert a patent against an "innovative startup". Its deep seated animus to anything "patent or copyright" could not be more apparent.

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Of course, it does not serve the goal I have fabricated for the EFF to raise a hue and cry every time a company has the audacity to assert a patent it acquired only after finding a target to sue. Its deep seated animus to this exact problem, which copyrights and patents demonstrably cause could not be more apparent.

FTFY.

If you want, you can reassign the EFF's animus of "anything patent or copyright" to me, as I will happily shoulder the label of someone who hates bad and destructive laws. But please refrain from using this case to try to drag the EFF's name through the mud. It just makes you look foolish.

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Perhaps it should not be overlooked that the patent has been available for review by the public (e.g., Ditto) since early 2006.

"But Mr Dent, the plans have been available in the local planning office for the last nine months."
"Oh yes, well as soon as I heard I went straight round to see them, yesterday afternoon. You hadn't exactly gone out of your way to call attention to them, had you? I mean, like actually telling anybody or anything."
"But the plans were on display ..."
"On display? I eventually had to go down to the cellar to find them."
"That's the display department."
"With a flashlight."
"Ah, well the lights had probably gone."
"So had the stairs."
"But look, you found the notice didn't you?"
"Yes," said Arthur, "yes I did. It was on display in the bottom of a locked filing cabinet stuck in a disused lavatory with a sign on the door saying 'Beware of the Leopard'."

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Consider:
1) Even a patent specialist will not guarantee that they have found all relevant patents.
2) Wilful infringement allow the patent owner to ask for even more in the way of damages.
3) A search is grounds for wilful infringement, despite 1 above.

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No patent search is best "tactic"? Perhaps it may seem so, but I happen to disagree based upon prior experience with both patent prosecution and patent litigation. Yes, willfulness will almost certainly be 'thrown in" in a lawsuit complaint, but it is difficult to prove and rarely succeeds.

Glasses

Re: Glasses

I disagree with Zenni, as they make their product overseas (last I checked, which was more than 2 years ago).

EyeBuyDirect makes their glasses in the US, has a reasonable return policy if you simply dislike what you chose, have a great return policy if the workmanship is defective, have a FANTASTIC accidental breakage replacement policy ($7.95, flat!), and have native-American-English speaking customer service. Yes, EyeBuyDirect is more expensive than Zenni, but their pricing is WELL below retail and their products are well-made.

(I have no financial interest or relation to EyeBuyDirect, I'm simply a very pleased customer. Almost two years ago I paid them ~$130 for specs that I priced at $600+ at multiple retail places. These, of course, I accidentally broke 4 days after receipt. EyeBuyDirect replaced them for $7.95! I'm also a fan of the $6.95 prescription sunglasses I bought from them, too!)

1-800-CONTACTS is suing in Utah because it's convenient for them. I know they used to have a huge presence in the south Salt Lake area (that might be their HQ, but I'm not sure). Suing in California would have been inconvenient for 1-800-CONTACTS, suing in Utah is inconvenient for Ditto, suing anywhere else would have been inconvenient for both parties. So it makes sense that the suing party would choose a location that is most convenient to themselves. At least it wasn't East Texas.

It's despicable what they're doing, but I thought I'd just explain why they're suing where they are.

I've spent over a grand at 1-800-contacts in past 18 months. Now that we'll be putting an end to that effective immediately, I'm open to recommendations if anyone has had good experiences with other online contact companies.

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I was a longtime 1-800-contacts user but the last time I was about to order I did a search and ended up using walmart's online contacts store. I use daily disposable contacts (Trueye) and they ended up costing about 1/3 less.

Am I to believe that the new patent covers using a "default position"?

The earlier patent said: "Two of the principal measurements required to be taken in making a pair of eyeglasses are the distance between the two pupils and the height at which the optical center or multifocal portion should be positioned relevant to the frame being used."

The "new" patent said: "17... the characteristics of the 3D face model include 3D positions of pupils and a nose profile of the 3D face model in reference to the 3D reference frame."

How the hell can claim 17 of the new patent be accepted by the examiner? That was clearly stated as the prior knowledge of anyone in the area by the earlier patent, but now this new patent has the claim accepted?!?!?!? Maybe the patent examiner needs some glasses.

I can't be bothered to look into this any closer. It's such a crock of shit.

Am I to believe that the new patent covers using a "default position"?

The earlier patent said: "Two of the principal measurements required to be taken in making a pair of eyeglasses are the distance between the two pupils and the height at which the optical center or multifocal portion should be positioned relevant to the frame being used."

The "new" patent said: "17... the characteristics of the 3D face model include 3D positions of pupils and a nose profile of the 3D face model in reference to the 3D reference frame."

How the hell can claim 17 of the new patent be accepted by the examiner? That was clearly stated as the prior knowledge of anyone in the area by the earlier patent, but now this new patent has the claim accepted?!?!?!? Maybe the patent examiner needs some glasses.

I can't be bothered to look into this any closer. It's such a crock of shit.

Author of article didn't do his research

Article says "Ditto's main innovation is doing something that 1-800-CONTACTS does not do[.]"

Now, I don't agree with what 1800-CONTACTS is doing, however this statement is totally incorrect. Glasses.com, which is owned by 1800-CONTACTS actually does have this functionality. I've used it myself. I don't know when Ditto started, or when 1800-CONTACTS implemented this feature, but I tried this out on glasses.com about 4-5 months ago. When I did it, it just took a picture and placed the different frames on my face appropriately. Now it looks like its full 3D.

Again, I'm not informed enough about the situation, and I'm not on 1800-CONTACTS side, however I would appreciate more accurate and in depth reporting. I can't trust a word of this article because of this blatantly incorrect statement by the author.

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That makes total sense and I'll take your word for it. But the author of this article is essentially claiming the CEO went to their website, stole the idea of giving people a way to virtually try on glasses, and is using patents to try and cover that up.

That's pretty far from the case, even if 1800-CONTACTS methods are pretty underhanded.

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... Did we read the same article? From what I read, the CONTACTS people went to Ditto's website, saw the face scanning feature they had for checking the look of a pair of glasses on someone's face, and then went out and bought a patent(from a dead company no less) for the specific purpose of suing Ditto into the ground over it.

There was a mention that CONTACTS may be implementing the same feature sometime in the future, but that seems to be more covering their actions by trying to make it look like they didn't buy up the patent for litigation purposes than any real desire to do so.

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What you're missing is that what the article claims is not the case.

What really happened was CONTACTS already had this feature for months, went onto Ditto's website and saw they were offering the same feature, and decided to buy a patent so they could sue them to stop.

It's still sleazy but a totally different scenario. One is outright theft, the other is covering their a$$es after the fact by buying a patent.

Glasses site

Eye Doctors Make Profit From Extreme Markup on Frames and Lenses

I live in Utah where 1-800-CONTACTS is based. I have some software developer friends who work at 1-800-CONTACTS. The last time I spoke with them they were whining that to send people lenses or glasses they needed a prescription.
“It’s not like we’re talking about narcotics here. It’s lenses and glasses.”

maybe Ditto should move their operation to India or China and ship the glasses/contact lenses from there. bangalore has some cutting edge factories that specialize in optics.

I just recently bought a US600 pair of sunglasses from Oakley that are made in India from their store there for US120. If Ditto wants to sell in the US and avoid the patents issue I suggest they move to a friendlier country.